`571-272-7822
`
`
`
`
`Paper 49
`Entered: November 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`COMPASS BANK, COMMERCE BANCSHARES, INC., and
`FIRST NATIONAL BANK OF OMAHA,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2014-00587 (Patent No. 6,826,694 B1)
`IPR2014-00786 (Patent No. 6,826,694 B1)1
`
`
`
`
`
`
`
`
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Granting Request to Preserve Record Pending Appeal
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`1 This Order addresses the same or similar issue in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`
`IPR2014-00587 (Patent No. 6,826,694 B1)
`IPR2014-00786 (Patent No. 6,826,694 B1)
`
`Patent Owner filed unopposed motions2 requesting that the records in
`
`these proceedings be preserved pending outcome of possible appeal. See
`
`Paper 58.3 Petitioners do not oppose the request. Id. at 1. The parties were
`
`permitted to file certain information under seal, in accordance with 37
`
`C.F.R. § 42.54(a). See Paper 36. The sealed information ordinarily
`
`becomes publicly available after final judgment. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).
`
`A party may file a motion to expunge confidential information from
`
`the record, however, if wishing to preserve its confidentiality. 37 C.F.R. §
`
`42.56. Here, Patent Owner asks that the record be preserved as is, i.e.,
`
`without removal or disclosure to the public of the information filed under
`
`seal, pending possible appeal. Under the present circumstances, it is
`
`reasonable to maintain the record undisturbed pending outcome of any
`
`appeal that is taken.
`
`At the conclusion of any appeal proceeding, or if no appeal is taken,
`
`Patent Owner may contact the Board for authorization to file a motion to
`
`expunge confidential information. During the course of the trial, testimony
`
`of Michah Lerner called into question whether the sealed information
`
`regarding AT&T’s GeoPlex project was truly confidential. Mr. Lerner
`
`testified that he taught college courses and wrote a textbook based upon the
`
`technology involved in the GeoPlex project. Ex. 2019 ¶ 4. Any motion to
`
`expunge confidential information should address whether the sealed
`
`information is truly confidential in light of Mr. Lerner’s testimony.
`
`
`2 The filing of the motion was authorized during a conference call held on
`October 30, 2015. See Ex.
`3 For the purposes of this Order, IPR2014-00587 is representative and all
`citations are to papers in IPR2014-00587 unless otherwise noted.
`
`2
`
`
`
`IPR2014-00587 (Patent No. 6,826,694 B1)
`IPR2014-00786 (Patent No. 6,826,694 B1)
`
`If Patent Owner does not contact the Board, then the information filed
`
`under seal will be made public in due course. See 77 Fed. Reg. at 48761.
`
`It is:
`
`ORDERED that within ten business days of the conclusion of any
`
`appeal proceeding, or if no appeal is taken within ten business days of the
`
`expiration of the period to file a notice of appeal, Patent Owner may contact
`
`the Board for authorization to file a motion to expunge confidential
`
`information; and
`
`FURTHER ORDERED that the record shall remain undisturbed as
`
`discussed herein until such time that a motion to expunge confidential
`
`information is filed or, if the Patent Owner fails to contact the Board as
`
`required herein, the information filed under seal shall be made public in due
`
`course.
`
`
`
`
`
`3
`
`
`
`
`
`IPR2014-00587 (Patent No. 6,826,694 B1)
`IPR2014-00786 (Patent No. 6,826,694 B1)
`
`
`
`
`PETITIONER:
`
`Kenneth R. Adamo
`Eugne Goryunov
`Kirkland & Ellis LLP
`Kenneth.adamo@kirkland.com
`Eugene.goryunov@kirkland.com
`
`
`Jason S. Jackson
`Sean P. Connolly
`Geoffrey K. Gavin
`Marc Vander Tuig
`jason.jackson@kutakrock.com
`sean.connolly@kutakrock.com
`ggavin@jonesday.com
`MVanderTuig@senniger.com
`
`
`
`
` PATENT OWNER:
`
`Brenton R. Babcock
`Ted M. Cannon
`Knobbe, Martens, Olson & Bear, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`
`
`
`4
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